Supreme Court Grants Cert. in Alice Corp. v. CLS Bank Intl.

by McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Building #2On Friday the Supreme Court granted certiorari in Alice Corp. v. CLS Bank Intl., opening the door once again for the Justices to further carve out the landscape of patent-eligible software and business method claims.

Triggering the Court's review was the Federal Circuit's six-opinion en banc decision this May, which illustrated a severe intra-circuit split.  Judge Lourie's concurrence was an attempt to synthesize the high court's 2012 Mayo v. Prometheus ruling into a procedure for analyzing claims that incorporate abstract ideas.  However, it was roundly criticized for failing to produce an objective, workable standard.  Chief Judge Rader wrote separately taking a somewhat more pragmatic approach, but one that exhibited a degree of internal inconsistency.  As a result, the Federal Circuit was unclear as to whether prior art should be considered in a 35 U.S.C. § 101 analysis, whether such an analysis should be applied to claims as a whole or to claim elements on a piecemeal basis, and whether recitation of general-purpose computer hardware (either as a claim element or as the statutory type of the claim) made a claim any less abstract.

Judges Lourie and Rader continued their dialog a few weeks later in Ultramercial, Inc. v. Hulu, LLC.  While both agreed that the claims at issue in this case were patent-eligible, Chief Judge Rader's majority opinion seemed limited to the facts of the case, and Judge Lourie's concurrence was terse and conclusory.  In late summer, the judges went at it again in Accenture Global Services, GmbH v. Guidewire Software, Inc.  This time, Judge Lourie wrote a majority opinion holding the claims invalid under 35 U.S.C. § 101, while Chief Judge Rader dissented.  Notably, the majority held that the claims, which recited disembodied functionality, where patent-ineligible even though they were couched in the language of a system or device.

The Federal Circuit's post-Prometheus 35 U.S.C. § 101 jurisprudence is unsettling in its subjectivity.  Prometheus instructs us to "identify and define whatever fundamental concept appears wrapped up in the claim."  However, few guidelines for doing so exist.  Two individuals could easily obtain two different variations of such an inventive concept for the same claim, one leading to the conclusion that the claim meets the requirements of § 101, the other not.

The Supreme Court has an opportunity to clarify the law of § 101, and perhaps even to provide an analysis that addresses the issues that split the Federal Circuit.  But with the recent Prometheus decision looming in the near past, doing so may be a delicate proposition.  The problems with the Alice, Ultramercial, and Accenture cases stem from Justice Breyer's Prometheus opinion and the guidance therein.  While it may seem aesthetically pleasing to conduct a § 101 analysis by dividing a claim into abstract and non-abstract parts as Justice Breyer suggested, doing so in practice has proven to be highly problematic.  Nonetheless, out of concern for judicial consistency, the Court may not want to walk back Prometheus or otherwise overturn Breyer's approach just yet. 

The question presented by Alice is "Whether claims to computer-implemented inventions -- including claims to systems and machines, processes, and items of manufacture -- are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?"  This is an extremely broad issue statement that goes well beyond the dispute inside the Federal Circuit.  Already, the news and blogs are predicting that this case could result in the death of software and business method patents.  Not so fast, people.  First of all, the Court already rejected categorical exclusion of software and business methods from patent-eligibility just three years ago in Bilski v. Kappos.  Second, the Court routinely decides cases on much narrower grounds than those encompassed by the question presented. 

It is possible, if not likely, that the Supreme Court will provide an opinion focused on the facts of the case, narrow in scope, and just different enough from Prometheus to oblige the Federal Circuit to conduct yet another round of § 101 soul searching.


Written by:

McDonnell Boehnen Hulbert & Berghoff LLP

McDonnell Boehnen Hulbert & Berghoff LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.